Xerox Corp v. Monument Peak Ventures LLC

1. Case Identification

• Case #: IPR2022-00318
• Patent #: 7,684,090
• Filed: December 15, 2021
• Petitioner(s): Xerox Corporation
• Patent Owner(s): Monument Peak Ventures, LLC
• Challenged Claims: 1-3, 5, 7, and 10

2. Patent Overview

• Title: Digital Printer Device For Use With Docked Display Device
• Brief Description: The ’090 patent discloses a digital docking printer adapted to receive a display device, such as a digital camera. The invention’s purported improvement is a rotatably joined interface that allows the docked camera and its display to be oriented in multiple positions relative to the printer's housing while maintaining an electrical connection.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 7, and 10 are obvious over Schinner in view of Romano.

• Prior Art Relied Upon: Schinner (Application # 2004/0212822) and Romano (Application # 2003/0156200).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schinner disclosed the core concept of independent claim 1: a docking printer that uses a docked digital camera’s display for viewing and selecting images, thereby avoiding the cost of a dedicated printer display. Schinner was argued to teach a printer with an external structure, a print engine, a display device interface (docking port), and a printer processor that sends command signals to the camera. Petitioner contended that Schinner also explicitly taught that its docking port could be mounted on an adjustable, swiveling pedestal, meeting the limitation of an adjustably mounted interface. Romano was asserted to provide a more detailed disclosure of the internal components, such as the digital camera processor (the claimed “display device controller”) that receives instructions from the printer processor to control the camera’s display.
  • Motivation to Combine: A POSITA would combine Schinner and Romano because both references addressed the identical problem of reducing printer costs by eliminating the printer’s dedicated display and instead using the display of a docked digital camera. Given that both proposed the same solution, a POSITA reviewing Schinner would have naturally looked to a similar system like Romano to implement or improve upon the design, particularly regarding the processor interactions which Romano detailed.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the systems. Incorporating Romano’s detailed processor functionality into Schinner’s docking printer would involve applying known engineering principles to achieve the predictable result of printer-based control over the camera’s display functions.

Ground 2: Claims 2 and 3 are obvious over Schinner in view of Romano and further in view of Takahashi.

• Prior Art Relied Upon: Schinner (Application # 2004/0212822), Romano (Application # 2003/0156200), and Takahashi (Application # 2004/0004671).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims 2 and 3, which required user interface controls and status indicators to be positioned on the movable display device interface. Petitioner argued that Schinner taught positioning user interface keys on a removable docking port portion, which would move with the interface. To the extent Schinner was not explicit enough, Takahashi was introduced as disclosing a digital camera cradle with a rotatable camera mounting unit. Critically, Takahashi’s rotatable unit included user interface controls (a power button) and status indicators (an LED) directly on its surface, which moved along with the unit as it rotated.
  • Motivation to Combine: A POSITA, starting with Schinner’s concept of an adjustable docking port, would be motivated to consult other adjustable camera cradles like Takahashi to find known ways of implementing such a feature. Because it is desirable for user controls to be located near the display they operate, a POSITA would be motivated to adopt Takahashi’s solution of placing controls and indicators directly on the movable mounting unit, ensuring they remain conveniently located and oriented with the camera display as it is repositioned.
  • Expectation of Success: A POSITA would expect success in integrating Takahashi’s controls onto Schinner’s adjustable docking port. This would be a straightforward mechanical and electrical integration of conventional components to achieve the predictable advantage of improved user ergonomics.

4. Arguments Regarding Discretionary Denial

• §325(d) Arguments: Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d), even though Schinner and Takahashi were cited in an Information Disclosure Statement (IDS) during the original prosecution. Petitioner contended that the Examiner made a material error by failing to appreciate the significance of these references. This failure was attributed to the original applicant (Kodak) not disclosing to the USPTO that the corresponding European Patent Office (EPO) and Patent Cooperation Treaty (PCT) applications were rejected based on the same prior art, with the applicant even conceding that the features of claim 1 were known from the prior art.
• Fintiv Arguments: Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court litigation was in a very early stage. At the projected institution date, no claim construction order would have been issued, discovery would be incomplete, and no other substantive orders on the merits would exist. To further mitigate concerns of inefficiency and overlap, Petitioner stipulated that if the IPR were instituted, it would not pursue the same invalidity grounds, or any grounds based on Schinner, in the parallel litigation.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 5, 7, and 10 of the ’090 patent as unpatentable.